Ex Parte ARDITI et al

Patent Trial and Appeal Board

Aug 29, 2018

13739957 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/739,957 01/11/2013
87334 7590
IBM END IPLA W (GLF)
c/o Garg Law Firm, PLLC
11910 Sendera Ln.
Richmond, TX 77407
08/31/2018
FIRST NAMED INVENTOR
YOELARDITI
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920 l 20249US 1 3365
EXAMINER
ADE, OGER GARCIA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
08/31/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@garglaw.com
dpandya@garglaw.com
garglaw@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOEL ARDITI, NORBERT HERMAN, and
DANIEL T. LAMBERT 1
Appeal2017-006157
Application 13/739,957
Technology Center 3600
Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
JASON M. REPKO, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's non-final rejection of claims 1 through 17. We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse and enter a new rejection.
1 According to Appellants, the real party in interest is International Business
Machines. App. Br. 2.
Appeal2017-006157
Application 13/739,957
INVENTION
Appellants' disclosed invention is directed to a method for tracking
purchases by a customer. The method involves receiving transaction records
and location records of respective users' mobile device. Based upon the
dates and times of the purchase and locations of the user, a determination is
made that one customer made the purchase. See Abstract. The
determination can be made by statistical analysis of the received data.
Specification para. 44. Claim 1 is representative of the invention and
reproduced below.
1. A method for tracking purchases by a customer, the method
comprising the steps of:
receiving records of purchases forming transaction
records, each of the transaction records identifying at least one
of a product, a service, a category of the product or service
purchased, and further including a date and time of purchase;
rece1vmg location records, the location records
comprising records of usage of mobile devices by respective
users of the mobile devices, each of the location records
indicating a date and time of each usage and an identifier of the
corresponding user;
correlating using the transaction records and the location
records, locations of the mobile devices at respective dates and
times of their usage to respective locations of stores that provide
products and services being purchased; and
based on the dates and times of a plurality of the
transaction records, matching, within a predetermined time
window, dates and times of a respective plurality of the location
records for one customer, determining, by one or more
processors, that the one customer purchased one or more of the
categories of products or services in the matching transaction
records, the one customer forming a common entity having a set
of entity attributes.
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Application 13/739,957
REJECTION AT ISSUE2
The Examiner rejected claims 1 through 17 under 35 U.S.C. § 101 for
being directed to patent-ineligible subject matter. Non Final Act. 3-5. 3
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: laws of
nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). The Supreme Court sets
forth a two-part "framework for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... [Mayo, 566 U.S. at
76-77]. If so, we then ask, "[w]hat else is there in the claims
before us?" Id., at ... [77-78]. To answer that question, we
consider the elements of each claim both individually and "as an
2 Throughout this Decision, we refer to the Appeal Brief filed May 13, 2016,
Reply Brief filed March 6, 2017, Non-Final Office Action mailed March 1,
2016, and the Examiner's Answer mailed January 12, 2017.
3 The Examiner withdrew the rejection of claims 1 through 17 under
35 U.S.C. § 103. Answer 5.
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Application 13/739,957
Id.
ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. Id., . .. at [77-78]. We have described step
two of this analysis as a search for an "'inventive concept"'-
i. e., an element or combination of elements that is "sufficient to
ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself." Id., at ... [71-
73].
Although an abstract idea itself is patent ineligible, an application of
the abstract idea may be patent eligible. Alice, 134 S. Ct. at 2355. Thus, we
must consider "the elements of each claim both individually and 'as an
ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78). The claim must contain elements or a
combination of elements that are "'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ abstract idea]
itself."' Id. (quoting Mayo, 566 U.S. at 72-73). The Federal Circuit has
explained that, in determining whether claims are patent-eligible under
Section 101, "the decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can be seen-
what prior cases were about, and which way they were decided." Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
The Federal Circuit also noted in that decision that "examiners are to
continue to determine if the claim recites (i.e., sets forth or describes) a
concept that is similar to concepts previously found abstract by the courts."
Id. at 1294 n.2.
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Appeal2017-006157
Application 13/739,957
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have persuaded us of error in the
rationale to reject claims under 35 U.S.C. § 101. However, we concur with
the Examiner's conclusion that the claims are directed to patent-ineligible
subject matter. As such, we Reverse the Examiner's rejection and enter a
newrejectionofclaims 1 through 17under35U.S.C. § 101.
Rejection under 35 USC§ 101
Appellants argue, on pages 8 through 10 of the Appeal Brief, and
pages 2 through 3 of the Reply Brief, that the Examiner's rejection under
§ 101 is in error as claim 1 is not directed to an abstract idea. Appellants
argue that the Examiner has failed to explain why the claims are directed to
an abstract idea but rather has merely stated that the claims recite a
mathematical relationship or formula. App. Br. 8. Appellants state the
"Examiner does not provide any reasoning as to any of these reasonable
questions in view of the summary allegation that 'the claim is directed to a
mathematical relationship/formula."' App. Br. 9 ( emphasis omitted).
Appellants argue the claims are not directed to an abstract idea, stating "the
invention claimed here is directed towards relating a customer to a
purchased product or service by way of matching the date, time, and location
of the customer and the store that sold the product or service, and distinct
from the types of concepts found by the courts to be abstract." Answer 10.
Additionally, Appellants argue the Examiner has not established that the
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Application 13/739,957
claims do not amount to significantly more than the abstract idea. App. Br.
9.
The Examiner finds
the claim is directed to a mathematical relationship/formula,
such as "tracking records of purchases forming transaction
records, identifying a product, service, or category of product or
service purchased, and a date/ time of purchase". The phrase
"mathematical relationships/formulas" is used to describe
mathematical concepts such as mathematical algorithms,
mathematical relationships, mathematical formulas, and
calculations.
Answer 2. Further, the Examiner identifies several cases where the courts
have found that claims directed to mathematical relationship/formula are
abstract. Answer 4 and 6. Further, the Examiner finds that the claims do not
include significantly more as the "generically-recited computer elements do
not add a meaningful limitation to the abstract idea as the actions ... would
be routine and conventional in any computer implementations." Answer 5,
6. The Examiner considers this rationale is sufficient to reject the claims.
We have reviewed the Examiner's rejection and response to
Appellants' arguments and concur with the Appellants that the Examiner has
presented insufficient rationale to demonstrate that claim 1 recites a
mathematical (an algorithm) and does not recite significantly more than the
abstract idea. Nonetheless, having reviewed the claim, we concur that with
the Examiner's conclusion that the claims do recite an abstract idea and do
not recite significantly more. The Examiner has not identified a
mathematical algorithm in the claim, nor has the Examiner identified the
type of mathematical algorithm the claims are interpreted as reciting, nor is
it readily apparent from the express limitations of the claims what
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Application 13/739,957
mathematical algorithms the claims are directed to. The rejection, which
merely identifying other cases where claims directed to mathematical
algorithms are found abstract, is insufficient to demonstrate the claim recites
an abstract idea. Accordingly, we reverse the Examiner's rejection under
35 U.S.C. § 101.
Nonetheless, we concur with the Examiner's conclusion that the
claims recite an abstract idea. Claim 1 recites limitations directed to
"receiving records of purchases forming transaction records" and "receiving
location records, the location records comprising records of usage of mobile
devices." These two limitations are merely directed to collecting data.
Claim 1 further, recites correlating the two received records, and based upon
dates and times of the records matching two records. Appellants'
Specification identifies that the matching may include a statistical analysis ( a
mathematical analysis) of the data. Spec. 44. Thus, the claim recites
collecting data, correlating the data (analyzing the data) performing
statistical analysis. These limitations are also similar to those at considered
to be abstract by the court in Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1354 (holding that claims directed to a process of gathering and
analyzing information of a specific content are directed to an abstract idea);
Content Extraction and Transmission LLC. v. Wells Fargo Bank, Nat'!
Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding that the claims were
"drawn to the abstract idea of 1) collecting data, 2) recognizing certain data
within the collected data set, and 3) storing that recognized data in a
memory."); and Smart Sys Innovations LLC v. Chi Transit Authority, 873
F.3d 1364, 1372 (Fed. Cir. 2017) (holding that claims directed to data
collection and a financial transaction in a particular filed, are directed to an
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abstract idea). Thus, we find that claim 1 is directed concepts that our
reviewing court has considered to be abstract and we conclude that the
claims are directed to an abstract idea.
Turning to the second part of the Alice test, we concur with the
Examiner's conclusion that the claims do not recite significantly more than
the abstract idea. As discussed above, claim 1 is similar to those at issue in
Electric Power Group, although the type of information is different, the
claims are directed to collecting information for analysis. As in Electric
Power Group, these limitations are not significant to differentiate the claim
and recite significantly more. Electric Power Group, 830 F.3d at 1354--
1355. The claimed use of a processer, to determine if a customer purchased
one or more category of product of service in the transaction, is performing
data processing and involves matching (which may include a statistical
process on the data, see Spec. para. 44). We concur with the Examiner that
this is merely reciting a generic component to implement abstract idea.
Neither, the claim nor Appellants' Specification, identify that the processor
is anything other than a generic processor. See Specification para. 77-79
(which identifies numerous generic computer components to implement the
method). As such, we do not find that the recitation of a processor is
directed to significantly more than the abstract idea. Our reviewing court
has said "[ w ]e have repeatedly held that such invocations of computers and
networks that are not even arguably inventive are 'insufficient to pass the
test of an inventive concept in the application' of an abstract idea." Electric
Power Group, 830 F.3d at 1355 (citing buySAFE, 765 F.3d at 1353, 1355).
Thus, we do not find that the claims recite, or the Specification identifies the
invention is directed to an improvement to the operation of the computers,
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Application 13/739,957
but rather recite using the computer as a tool (to solve a marketing problem,
see Spec. para. 20). Accordingly, we are not persuaded that the claims recite
significantly more and conclude the claims are directed to patent in-eligible
subject matter.
Dependent claims 2 through 4, 10 through 12, 14 merely further limit
the type of data and as such merely modifies the abstraction. In Electric
Power Group, the court stated "we have treated collecting information,
including when limited to particular content ( which does not change its
character as information), as within the realm of abstract ideas." Electric
Power Group, 830 F.3d at 1353.
Dependent claims 5 through 9, 13, and 15 further define the algorithm
that is used in correlating the gathered data and merely refine the abstract
data processing.
Dependent claims 16 and 17, recite generic components to implement
the method of claim 1 and do not recite significantly more than the abstract
idea but rather recite using the generic components as a tool to implement
the abstract idea.
DECISION
We reverse the Examiner's rejections of claims 1 through 17 under
35 U.S.C. § 101 and enter a new rejection of claims 1 through 17 under
35 U.S.C. § 101.
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). This section provides that "[a] new ground of rejection ... shall
not be considered final for judicial review."
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Application 13/739,957
37 C.F.R. § 4I.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±)(2016).
REVERSED
37 C.F.R. § 4I.50(b)
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